erhtjhtyhy 2 BACKGROUND What Who Where When Why How Agenda Background Dispute Resolution 3 Background 4 Example allegation issues IP Ownership Field of Use Sovereign Immunity Florida Prepaid v College Saving Bank ID: 694269
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Slide1
Lessons learned –Lab IP Enforcement
erhtjhtyhySlide2
2
BACKGROUNDWhat
WhoWhereWhenWhy
How
AgendaSlide3
Background
Dispute Resolution
3Slide4
Background
4
Example allegation issues: IP Ownership? Field of Use?
Sovereign Immunity? (Florida Prepaid v College Saving Bank)
Negotiation
ploy?Slide5
what
Li-ion Positive Electrode (Cathode) Materials for Batteries
5Slide6
who
Plaintiff:Licensee of certain cathode material battery patentsArgonne: Licensor (standing, discovery, witnesses)
Licensee pursued the action to protect the patents,
and had the right to include Argonne as a party in order to protect the
patents
Defendants:
Defendant A: Based in Europe
Defendant B: Based in Japan
Parties
6Slide7
Licensee Investments in
U.S.
7Slide8
where
International Trade Commission (ITC)Remedy: Exclusion Order to block infringing importsDelaware District Court
“Stayed” pending ITC actionPatent and Trademark Appeals Board (PTAB) IPR(s) to challenge validity of patents
8Slide9
February 2015: Filed Suit
Discovery, InterrogatoriesJuly 2015: Markman Hearing
DepositionsExpert WitnessesOctober 2015: ITC Hearing
February
2016: Initial
Determination
June 2016:
Initial Commission deadline
November 2016: Public Interest Hearing
December 2016: Commission ruling
February 2017: USTR review concluded
July 2015: 1
st
Petition for IPR (Defendant B) –dropped as part of business resolution
November 2015: 2
nd
Petition for IPR (Def A)
March 2016: Response to IPR request
June 2016: Petition for IPR denied by PTAB
PTAB
9
ITC and PTAB are FAST
ITC
whenSlide10
When
1998 Research Funded by DOE2000 Patents Filed2004 Patents Issue2005 Meeting with Defendant A
2008 License to another Company2009 License to Licensee Plaintiff2009 Meeting with Defendant A
2010 Licenses to other Companies
2013 Patent Confirmed after Patent Re-examination
2015 Lawsuit Filed
2016 Judge and Commission Rulings
2017 Business Resolution
Commercialization Takes Time
10Slide11
Market size commensurate with potential costs/risks of patent lawsuit
Licensee had performed reasonable investigation into infringementLicensee experience
with patent litigationLicensee had financial wherewithal for potential costs of patent lawsuit (and willing to pay Lab’s costs)
Licensee
treated Argonne as value-added
partner
Division
Management and
PI supportive
Licensee
wanted to protect its investment in its factory and jobs
in the U.S
. to produce the licensed materials from infringing
foreign imports
.
Reducing
market uncertainty regarding the patents promoted the use of this
material
to improve energy storage performance and stability
Infringer
had (has) opportunity to obtain a
licensePublicly recognized value of technology
Optics11
PragmaticwhySlide12
12
Two Presidents Recognized Contributions of ANL Team
WhySlide13
How
Provided Licensee right to sue, subject to:Bear costs of litigation, including Licensor counsel fees and defense of countersuits or actions against patentsLicensor input and approval regarding scope, validity, enforceability of patents
Not abandon or settle without Licensor prior written consentSettlement and Litigation costs
Non-cash value?
Affirmation to sublicense technology
Licensor retain limited rights to license for R&D purposes
Amendment with Licensee
13Slide14
How – teamwork
Frequent and frank communicationTreat with respectListen to concernsAlign interests to extent possible
Minimize surprisesMeet deadlines Build trust relationship
Licensee
14Slide15
How – teamwork
Frequent and frank communicationDiscuss roles of outside counsel(s)Advise versus manageFacilitate sharing between outside counsel(s)
Surge resourcesUnderstand payment arrangements and incentives
Outside Counsel(s)
15Slide16
16
Inventors
Manage concerns wrt discovery, deposition, trial fact witnessBuild/maintain trust
Minimize disruption
R
eaction to stress
Each inventor unique
How –
teamworkSlide17
Frequent and frank communicationVery supportive
30(b)(6) witnesses
Scrutiny of Technology Transfer Manuals and licensing process
Good reporting/electing records
Lab Notebooks important (inventorship, credibility)
Record retention
Correspondence
Other items of interest
17
Other
Internal Constituents
Management
HOW
–
TEAMWORKSlide18
18
DOE
Frequent and frank communicationDOE participated in Public Interest Hearing to
protect
DOE investment in R&D to help U.S.
Competitiveness
“Allowing parties to import, use, and deploy DOE funded, patent-protected technologies without permission would seriously undermine DOE’s innovation pipeline and DOE’s ability to partner with universities and private industry to commercial DOE-funded technologies and earn a return on investments for taxpayers.”
THANK YOU!
How –
teamworkSlide19
Any questions